Used with Creative Commons License
Filing your own trade mark – things can go wrong
We will start here with a simple scenario.
Imagine you’re a business owner with a product line and you file a trade mark application for the brand. To save time, you copy the list of goods from someone else’s application.
You think everything’s set and the process seems easy.
Months later, your trade mark is challenged, and you lose because your application didn’t align with your actual business plans.
This scenario mirrors what happened in the Federal Court case Energy Beverages LLC v Kangaroo Mother Australia Pty Ltd [2023] FCA 999. It’s a case that highlights the importance of…
What is a Trade Mark?
A trade mark is a sign, symbol, or word that sets your goods or services apart from others in the market.
Sometimes we say that its like your brand’s fingerprint.
To register a trade mark in Australia, you need to specify the goods or services you’ll use it for.
But here’s the catch: you must have a clear intention to use the trade mark for everything you list. Filing for goods or services you don’t intend to sell can land you in legal trouble.
The Case of Kangaroo Mother
In this case, Erbaviva Natural Care (New Zealand) Limited, later assigning the application to Kangaroo Mother Australia (KMA), sought to register the trade mark “KANGAROO MOTHER” for a wide range of products. The goods listed ranged from nutritional supplements to adhesive tapes for medical purposes and it was a really diverse mix.
What went wrong with their trade mark application?
When telling your lawyer what goods or services to cover in your trade mark application, focus on what you genuinely plan to offer.
Overly broad or unrelated categories can invite legal challenges even though it might be tempting to start with.
Also – keep detailed records that demonstrate your intent to use the trade mark. This could include business plans, product prototypes, marketing materials, or agreements with suppliers. These documents can serve as evidence to support your application if it’s ever challenged.
At Sharon Givoni Consulting, we make trade marks simple. Whether you’re filing for the first time or navigating a complex dispute, our expert team is here to guide you every step of the way.
Please note the above article is general in nature and does not constitute legal advice.
Please email us info@iplegal.com.au if you need legal advice about your brand or another legal matter in this area generally.